DETAILED ACTION
The communication dated 4/15/2026 has been entered and fully considered. Claim 1 is amended. Claims 1-16 are amended.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
Applicant argues that prior art, KRAPSCH, does not teach the starch content of the amended claim 1.
Applicant's arguments filed 4/15/2026 have been fully considered but they are not persuasive. KRAPSCH teaches the weight ratio of the starch to the cellulose material in the final product is 1:400±200 (equivalent to 0.16% to 0.5% starch content) [0065]. This range overlaps the instant claim range of 1-3 kg/tonne (equivalent to 0.1% to 0.3%).
Applicant argues that prior art, KRAPSCH, does not teach an air resistance or grammage within the instant claim range.
Applicant's arguments filed 4/15/2026 have been fully considered but they are not persuasive. KRAPSCH is not relied on to teach the air resistance or grammage.
Applicant argues that prior art, NEAGU, does not teach the addition of PAE, GPAM, and starch together as required.
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding the grammage, KRAPSCH, does not teach an air resistance within range of the instant claim. RUTHVEN (US 20200354892 A1) teaches a similar cellulose paper modified with starch [0032], GPAM [0032], and PAE [TABLE 2] with compositions for each ranging from 1 to 4 pounds per ton (equivalent to 0.5-2kg/ton) similar to KRAPSCH and the instant claim. RUTHVEN further teaches that the resultant paper has a GURLEY porosity of 1s to about 100s [0042]. This range overlaps the instant claim range of “37 seconds” similar to SPENDER. RUTHVEN also teaches the resultant paper has a basis weight ranging between about 25 and 45 lb/3000ft2 (equivalent to about 40 gsm to about 65 gsm) [0033]. This range is within the instant claim range of “wherein the paper has a grammage measured according to ISO 536:2019 of 30-120 g/m2”. RUTHVEN teaches the use of the composition improves the combination of environmental impact, cost and performance [0002]. It would be obvious to one skilled in the art to substitute the similar composition of RUTHVEN into the composition of KRAPSCH to produce an improved paper. One would be motivated substitute the art based on the improved combination of environmental impact, cost and performance as taught by RUTHVEN.
Applicant argues that prior art, SPENDER, does not teach a GURLEY porosity within range after treatment.
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding the air resistance and grammage, KRAPSCH, does not teach an air resistance within range of the instant claim. RUTHVEN teaches a similar cellulose paper modified with starch [0032], GPAM [0032], and PAE [TABLE 2] with compositions for each ranging from 1 to 4 pounds per ton (equivalent to 0.5-2kg/ton) similar to KRAPSCH and the instant claim. RUTHVEN further teaches that the resultant paper has a GURLEY porosity of 1s to about 100s [0042]. This range overlaps the instant claim range of “an air resistance measured according to ISO 5636-5: 2013 below 37 s”. RUTHVEN also teaches the resultant paper has a basis weight ranging between about 25 and 45 lb/3000ft2 (equivalent to about 40 gsm to about 65 gsm) [0033]. This range is within the instant claim range of “wherein the paper has a grammage measured according to ISO 536:2019 of 30-120 g/m2”. RUTHVEN teaches the use of the composition improves the combination of environmental impact, cost and performance [0002]. It would be obvious to one skilled in the art to substitute the similar composition of RUTHVEN into the composition of KRAPSCH to produce an improved paper. One would be motivated substitute the art based on the improved combination of environmental impact, cost and performance as taught by RUTHVEN.
Applicant argues there is no reason to modify the structure of KRAPSCH outside of hindsight reasoning.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Claim Objections
Claim 5 is objected to because of the following informalities: the phrase “such as” is exemplary and should be deleted. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-7, 13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over KRAPSCH (US 20140284011 A1) in view of RUTHVEN (US 20200354892 A1), and SPENDER (US 20190323177 A1).
For claim 1, KRAPSCH teaches a surface treated paper for use as a paper, board or paper product [abstract]. The examiner understands that the limitation of “A paper for use in a medical device package paper” is in the preamble and as such does not hold patentable weight. KRAPSCH teaches a surface treatment composition that uses polyamidoamine epichlorohydrin (PAE) [0263], glyoxylated polyacrylamide [0263], and starch [abstract]. This teaches the limitation of “said paper comprising polyamino amide epichlorohydrin (PAE) resin, glyoxylated polyacrylamide (G- PAM) and starch”. KRAPSCH teaches the weight ratio of the starch to the cellulose material in the final product is 1:400±200 (equivalent to 0.16% to 0.5% starch content) [0065]. This value overlaps the instant claims range of “and the amount of starch is 1-3 kg/tonne dry paper (equivalent to 0.1% to 0.3%)”. KRAPSCH further teaches the PAE is added to the paper composition of between 300 to about 3500 g/metric ton (equivalent to 0.3 to about 3.5 kg/tonne) based on the overall composition [0220]. This value overlaps the instant claims range of “wherein the amount of PAE resin is 0.15-1.75 kg/tonne dry paper”. KRAPSCH does not teach the grammage or air resistance as measured by the ISO methods.
Regarding the air resistance and grammage, KRAPSCH, does not teach an air resistance within range of the instant claim. RUTHVEN teaches a similar cellulose paper modified with starch [0032], GPAM [0032], and PAE [TABLE 2] with compositions for each ranging from 1 to 4 pounds per ton (equivalent to 0.5-2kg/ton) similar to KRAPSCH and the instant claim. RUTHVEN further teaches that the resultant paper has a GURLEY porosity of 1s to about 100s [0042]. This range overlaps the instant claim range of “an air resistance measured according to ISO 5636-5: 2013 below 37 s”. RUTHVEN also teaches the resultant paper has a basis weight ranging between about 25 and 45 lb/3000ft2 (equivalent to about 40 gsm to about 65 gsm) [0033]. This range is within the instant claim range of “wherein the paper has a grammage measured according to ISO 536:2019 of 30-120 g/m2”. RUTHVEN teaches the use of the composition improves the combination of environmental impact, cost and performance [0002]. It would be obvious to one skilled in the art to substitute the similar composition of RUTHVEN into the composition of KRAPSCH to produce an improved paper. One would be motivated substitute the art based on the improved combination of environmental impact, cost and performance as taught by RUTHVEN.
For claim 2, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. KRAPSCH teaches the GPAM is added at between 1.5 and 4 kg/t of dry paper [0348]. This range is within the instant range of “wherein the amount of G-PAM is 0.5-6.0 kg/tonne dry paper”.
For claim 3, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. KRAPSCH teaches the PAE is added to the paper composition of between 300 to about 3500 g/metric ton (equivalent to 0.3 to about 3.5 kg/tonne) based on the overall composition [0220]. This value overlaps the instant claims range of “wherein the amount of PAE resin is 0.25-1.50 kg/tonne dry paper”.
For claim 4, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. KRAPSCH teaches the use of cationic GPAM [0262]. This teaches the limitation of “wherein said G-PAM is cationic G-PAM”.
For claim 5, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. RUTHVEN teaches the base paper can be a bleach kraft [0011]. This teaches the limitation of “which is a kraft paper, such as a machine glazed (MG) kraft paper”.
For claim 6, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. RUTHVEN teaches the base paper can be a bleach kraft [0011]. This teaches the limitation of “which is bleached”.
For claim 7, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. RUTHVEN also teaches the resultant paper has a basis weight ranging between about 25 and 45 lb/3000ft2 (equivalent to about 40 gsm to about 65 gsm) [0033]. This range overlaps the instant claim of “wherein the grammage measured according to ISO 536:2019 is 30-50 g/m2”.
For claim 13, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. KRAPSCH teaches the entire furnish is made from virgin pulp fiber [0056]. This teaches the limitation of “wherein at least 75% by dry weight of the fibers of the paper are virgin fibers”.
For claim 16, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. KRAPSCH teaches the entire furnish is made from virgin pulp fiber [0056]. This teaches the limitation of “wherein at least 90% by dry weight of the fibers of the paper are virgin fibers”.
Claims 8, 12, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over KRAPSCH (US 20140284011 A1), RUTHVEN (US 20200354892 A1) in view of SPENDER (US 20190323177 A1).
For claim 8, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. SPENDER teaches a packaging paper [0016] with starch [0012], GPAM (glyoxalated resin) [0082], and PAE [0082] similar to KRAPSCH. SPENDER teaches an example where 125 gram of pulp is treated with additive resulting a paper with a volume of 45.2 cm3 (equivalent to a density of 2760 kg/m3) [0164]. This value is within the instant claim range of “wherein the density measured according to ISO 534:2011 is at least 600 kg/m3. SPENDER teaches the advantage of the invention is the renewable materials origin, biodegradable nature, and low toxicity allowing contact with food [0038]. It would be obvious to one skilled in the arts at the time of invention to modify the paper of KRAPSCH with the method SPENDER and expect a Gurley porosity of SPENDER given the similar composition. One would be motivated to modify paper of SPENDER based on the renewable materials origin, biodegradable nature, and low toxicity allowing contact with food as taught by SPENDER.
For claim 12, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. SPENDER teaches a packaging paper [0016] with starch [0012], GPAM (glyoxalated resin) [0082], and PAE [0082] similar to KRAPSCH. SPENDER teaches the paper is made of hardwood fiber and softwood fiber used alone or in combination [0130]. This teaches the limitation of “which is formed from a softwood pulp”. SPENDER teaches the advantage of the invention is the renewable materials origin, biodegradable nature, and low toxicity allowing contact with food [0038]. It would be obvious to one skilled in the arts at the time of invention to modify the paper of KRAPSCH with the method SPENDER and expect a Gurley porosity of SPENDER given the similar composition. One would be motivated to modify paper of SPENDER based on the renewable materials origin, biodegradable nature, and low toxicity allowing contact with food as taught by SPENDER.
For claim 14, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. SPENDER teaches a packaging paper [0016] with starch [0012], GPAM (glyoxalated resin) [0082], and PAE [0082] similar to KRAPSCH. SPENDER teaches the paper of the invention is used in medical device packaging [0016]. This teaches the limitation of “A medical device package comprising a paper according to claim 1”. SPENDER teaches the advantage of the invention is the renewable materials origin, biodegradable nature, and low toxicity allowing contact with food [0038]. It would be obvious to one skilled in the arts at the time of invention to modify the paper of KRAPSCH with the method SPENDER and expect a Gurley porosity of SPENDER given the similar composition. One would be motivated to modify paper of SPENDER based on the renewable materials origin, biodegradable nature, and low toxicity allowing contact with food as taught by SPENDER.
For claim 15, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. SPENDER teaches a packaging paper [0016] with starch [0012], GPAM (glyoxalated resin) [0082], and PAE [0082] similar to KRAPSCH. SPENDER teaches the paper is made of hardwood fiber and softwood fiber used alone or in combination [0130]. This teaches the limitation of “which is formed from a mixture of a softwood pulp and a hardwood pulp”. SPENDER teaches the advantage of the invention is the renewable materials origin, biodegradable nature, and low toxicity allowing contact with food [0038]. It would be obvious to one skilled in the arts at the time of invention to modify the paper of KRAPSCH with the method SPENDER and expect a Gurley porosity of SPENDER given the similar composition. One would be motivated to modify paper of SPENDER based on the renewable materials origin, biodegradable nature, and low toxicity allowing contact with food as taught by SPENDER.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over KRAPSCH (US 20140284011 A1), RUTHVEN (US 20200354892 A1) in view of KINAST (US 20170350074 A1).
For claim 9, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. KRAPSCH does not teach the use of Cobb 60 to validate the final paper. KINAST teaches a treated paper with a coating of starch [0103] similar to KRAPSCH. KINAST also teaches the starch coated paper has a Cobb value of 18 g/m2. This value is within the instant claim range of “wherein the Cobb 60 s value measured according to ISO 535:2014 of at least one side of the paper is below 40 g/m2”. KINAST teaches the advantage of the starch coating improves the printability and prevents the paper from curling after drying [0070]. It would be obvious to one skilled in the arts at the time of invention to expect a similar result, Cobb 60, of KINAST from the composition of KRAPSCH. One would be motivated to combine the art based on the improved the printability and prevention of the paper from curling after drying as taught by KINAST.
Claim(s) 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over KRAPSCH (US 20140284011 A1), RUTHVEN (US 20200354892 A1) in view of KOSONEN (US 20140338849 A1).
For claim 10 KRAPSCH and RUTHVEN teach the paper of claim 1, as above. RUTHVEN does not teach a tensile strength for the resulting paper. KOSONEN teaches a similar papermaking furnish made of cellulose, cationic polyacrylamide, and starch [0057]. KOSONEN further teaches the advantage of the treatment is the reduced need for release chemical due to the additives used. KOSONEN also teaches the tensile index according to ISO 1924-3 is greater than 100 Nm/g [Fig 2]. This range is within the range of the instant claim of “wherein the geometrical tensile index measured according to ISO 1924-3:2005 is at least 50 Nm/g”. It would be obvious to one skilled in the arts at the time of invention to expect a similar result, tensile strength, of KOSONEN from the composition of KRAPSCH. One would be motivated to combine the art based on the reduced need for release chemical due to the additives used as taught by KOSONONEN.
For claim 11, KRAPSCH and RUTHVEN teach the paper of claim 1, as above. RUTHVEN does not teach a wet tensile strength for the resulting paper. KOSONEN teaches a similar papermaking furnish made of cellulose, cationic polyacrylamide, and starch [0057]. KOSONEN further teaches the advantage of the treatment is the reduced need for release chemical due to the additives used. KOSONEN also teaches the wet tensile index according to ISO 1924-3 is 10.8 Nm/g [Fig 2]. This value is within the range of the instant claim of “wherein the geometrical wet tensile index measured according to ISO 1924-3:2005 is at least 10 Nm/g”. It would be obvious to one skilled in the arts at the time of invention to expect a similar result, tensile strength, of KOSONEN from the composition of KRAPSCH. One would be motivated to combine the art based on the reduced need for release chemical due to the additives used as taught by KOSONONEN.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN M RUSSELL whose telephone number is (571)272-6907. The examiner can normally be reached Mon-Fri: 7:30 to 4:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.M.R./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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